Stena Rederi Aktiebolag v Danyard A/S
[2000] APO 26
•29 March 2000
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 648634 in the name of Stena Rederi Aktiebolag
Title: A Hull Structure For Multi-Hull Ships
Action: Opposition by Danyard A/S under section 59 of the Patents Act 1990
Decision: Issued .
Abstract
The opposition failed to establish the grounds of non-compliance with Section 40, Lack of Novelty and Lack of Inventive Step.
The opposed application had been twice amended after acceptance. The award of costs reflected the impact of these amendments. Costs up to 4 March 1999 (advertisement of acceptance of the second amendment) were awarded in favour of the opponent Danyard A/S. Costs subsequent to 4 March 1999 were awarded in favour of the applicant Stena Rederi Aktiebolag.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 648634 by STENA REDERI AKTIEBOLAG and an opposition under section 59 of the Patents Act 1990 by DANYARD A/S.
BACKGROUND
Application No. 10512/92 was filed by Stena Rederi Aktiebolag (hereafter referred to as Stena) on 28 January 1992. The application claims priority from SE 9100288-1 filed in Sweden on 30 January 1991. The application was examined and advertised accepted under the serial number 648634 on 28 April 1994.
NQEA Australia Pty Limited filed a notice of opposition on 25 July 1994. The opposition was subsequently withdrawn on 5 October 1995. Westamarin A/S filed a notice of opposition on 28 July 1994. The opposition was subsequently withdrawn on 3 April 1998.
Danyard A/S (hereafter referred to as Danyard) filed a notice of opposition on 27 July 1994, and served a statement of grounds and particulars on 26 October 1994. The opponent filed a request to amend the statement of grounds and particulars on 25 January 1995 and the amendment was allowed on 27 June 1995. Subsequently the opponent filed another a request to amend the statement of grounds and particulars on 9 August 1996 and the amendment was allowed on 30 August 1996. The service of evidence in support, evidence in answer and evidence in reply was completed on 7 October 1996. The opponent served further evidence on 8 October 1996 and the applicant filed evidence in response on 3 January 1997.
The applicant filed a request to amend the specification on 13 October 1995 and the allowance was advertised on 27 June 1996. Subsequently the applicant filed another request to amend the specification on 6 March 1998 and the allowance was advertised on 4 March 1999.
The hearing was held in Canberra on 13 April 1999. Mr John Nicholas of counsel represented the applicant assisted by Mr. Ryan D. Curnick, patent attorney of Spruson & Ferguson, Sydney. Mr Anthony JF Ward, patent attorney of Griffith Hack, Melbourne represented the opponent.
EVIDENCE
Evidence in support consists of declarations by:
Anthony John Fowler Ward, dated 24 April 1995 and exhibits AJFW 1-7. He states that he is currently a patent attorney with Griffith Hack & Co.
Christian Schack, dated 20 April 1995 and exhibits CS 1-7. He states that he is currently employed as a naval architect with Danyard A/S.
Mark Ellis, dated 26 April 1995 and exhibits ME 1-5. He states that he is currently the Managing Director of a company that trades under the name Mark Ellis Marine Design and Management.
Marianne Bonde, dated 11 January 1995. She states that she is currently the librarian at the Department of Ocean Engineering of the Technical University of Denmark.
Evidence in answer consists of declarations by:
Ian Alexander Millar, dated 29 February 1996 and exhibit IAM-1. He states that he is currently a Technical Assistant with Spruson & Ferguson.
Dr Martin Robert Renilson, dated 24 June 1996 and exhibit MRR-1. He states that he is currently a Principal Lecturer with the Australian Maritime College.
Evidence in reply consists of declarations by:
James Morrison Black, dated 1 October 1996 and exhibits JMB-1 to 10. He states that he is currently a consultant naval architect with over 20 years experience in the marine industry.
Mark Ellis, dated 8 October 1996 and exhibits ME 6-8.
Subsequently the following further evidence/declarations were filed in the proceeding:
Dr Martin Robert Renilson, dated 17 October 1996.
James Morrison Black, dated 26 November 1998 and exhibits JMB-11 to 15.
Dr Martin Robert Renilson, dated 24 December 1998.
At the hearing the applicant withheld submissions on certain issues as it contended that the opponent had raised new matters that had not been previously raised in the evidence and in submissions filed by the opponent. Subsequently I ruled that
"The applicant will make submissions and supply evidence relating to issues raised by the opponent at the hearing which issues had not been previously raised in the opponent's submissions and evidence up to the hearing date. The applicant is granted two months from the date of the hearing (13 April 1999) to supply their submissions and evidence addressing the new issues. The applicant did not reply to all of the opponent's submissions at the hearing and will make a detailed written reply covering those issues within the time limit set out above.
The opponent will have a right of reply to all the submissions and evidence filed by the applicant, with a time limit of two months to provide their reply. The two months is counted from the date of receipt of new submissions and evidence from the applicant."
On 11 June 1999 the applicant filed a declaration by Dr Martin Robert Renilson, dated 10 June 1999 and exhibit MRR-2. On 11 August 1999 the opponent filed a declaration by James Morrison Black, dated 5 August 1999. Subsequently the applicant sought a hearing in the matter but the opponent did not express any interest in having a second hearing. Consequently I indicated to both parties that:
"It is not clear at this stage whether the parties want the hearing reconvened or they want to rely on written submissions. I understand that the parties are discussing this matter between themselves. Please advise within 14 days of 29 August 1999 which option is being pursued to progress the matter.
If the parties want a hearing we will then set a hearing date as soon as practicable.
If the parties wish to rely on written submissions I will allow each party one month from 29 August 1999 to provide them. Please note that the submissions provided will be forwarded to the other party, who will be given one month to respond."
Subsequently the applicant filed submissions on matters it had not covered at the hearing (held on 13 April 1999) on 29 September 1999. The opponent filed its response on 29 October 1999.
THE SPECIFICATION
The specification under consideration is the specification as twice amended after acceptance and during the opposition. The allowance of the second amendment was advertised on 4 March 1999. The specification begins by stating:
"The present invention relates to a hull structure for a multi-hull ship."
The specification identifies drawbacks of the prior art and then states that:
"An object of the present invention is to provide a hull of favourable construction for multi-hull vessels. Thus, the objective of the invention is to provide a hull structure which a) has low tendency to upward lift under the influence of waves during movement of the vessel through water, b) is highly efficient and will allow the vessel to be propelled at high speeds, c) will result in only a small reduction in speed in high seas, d) has a high load resistance and will enable the vessel to be powered by means of any desired power means, including water-jet propulsion systems, and e) has a high stern stability so as to enable the vessel to be loaded and unloaded from the stern thereof."
The consistory statement specifies that:
There is disclosed herein a hull for multi-hull seagoing vessels capable of speeds greater than 30 knots, wherein:
in the case of the sternward half of the hull, located between the stern and midships of the hull, the vertical distance from the hull base line to the volumetric centre-of-gravity of that part of the respective half of the hull below a water line corresponding to a normally occurring hull draft is greater than 55% of the normally occurring draft;
in case of the foreward half of the hull, located between the forebody of the hull and midships, said vertical distance is less than 55% of the draft;
at a position corresponding to 75% of the total length of the underwater body of the hull calculated from the stern of the hull, the distance between the base line and the centre-of-gravity of the frame area (as defined herein) below the waterline, and at that position is less than 55% of the draft; and
the width of the hull at the water line is substantially greater in the after body of the hull than in the foreward body of the hull and continually decreases in a forward direction, and wherein the cross-sectional shape of the hull throughout a substantial portion of the forward half of the hull located between the bow and midships has a bulbous underwater part and a narrow waisted part which extends through the water line.
A number of preferred features are then identified followed by a detailed description of the invention. The specification ends with ten claims as set out below:
1. A hull for multi-hull seagoing vessels capable of speeds greater than 30 knots, wherein:
in the case of the sternward half of the hull, located between the stern and midships of the hull, the vertical distance from the hull base line to the volumetric centre-of-gravity of that part of the respective half of the hull below a water line corresponding to a normally occurring hull draft is greater than 55% of the normally occurring draft;
in case of the foreward half of the hull, located between the forebody of the hull and midships, said vertical distance is less than 55% of the draft;
at a position corresponding to 75% of the total length of the underwater body of the hull calculated from the stern of the hull, the distance between the base line and the centre-of-gravity of the frame area (as defined herein) below the waterline, and at that position is less than 55% of the draft; and
the width of the hull at the water line is substantially greater in the after body of the hull than in the foreward body of the hull and continually decreases in a forward direction, and wherein the cross-sectional shape of the hull throughout a substantial portion of the forward half of the hull located between the bow and midships has a bulbous underwater part and a narrow waisted part which extends through the water line.2. A hull according to claim 1, wherein the vertical distance from the base line to the gravity centre point of the frame area beneath the water line at a position corresponding to 75% of the total length of the underwater body of the hull, calculated from the stern, is less than 50% of the draft.
3. A hull according to claim 1 or claim 2, wherein the vertical distance from the base line to the gravity centre point is at least 60% of the draft in the case of the sternward half of the hull and less than 50% of the draft in the case of the forward half of said hull.
4. A hull according to any one of claims 1 to 3, wherein the vertical distance from the base line to the gravity centre point of the frame area up to the water line or the sternmost frame which reaches up to the water line is greater than 65% of the draft; and
the vertical distance from the baseline to the gravity centre point of the foremost frame which reaches up to the same water line is less than 50% of the draft.
5. A hull according to any one of claims 1 to 4, wherein the vertical distance between the base line and the bottom line of said underwater body increases from the midships part to the stern part of said hull.
6. A hull according to claim 5, wherein the vertical distance from the base line to the bottom line of said underwater body increases towards the stern of said hull to at least 40% of the maximum draft; and
the rise in the bottom line begins at the midships area of the hull.
7. A hull according to any one of claims 1 to 5, wherein the width of the hull at the water line is substantially constant in the case of the sternward quarter part of the vessel and then narrows towards the prow of the vessel.
8. A hull according to any one of claims 1 to 7, wherein the vertical distance between the base line and the gravitational centre point of the frame area located beneath the water line falls essentially continuously from the stern to the prow of the hull.
9. A hull according to any one of claims 1 to 8, wherein the vertical distance between the bottom line of the underwater body and the base line is substantially constant in the forward part of the hull.
10. A hull for multi-hull seagoing vessels, the hull being substantially as hereinbefore described with reference to the accompanying drawings.
STATEMENT OF GROUNDS AND PARTICULARS
Danyard filed a second amended statement of grounds and particulars dated 9 August 1996. In brief the grounds of opposition are as set out below:
1. Novelty: The invention as defined in Claim 1 at least of Australian Patent application No. 648634 is not novel when compared with the prior art base as it existed before the priority date of the claim.
2. Inventive Step: The invention as claimed in at least claim 1 does not involve an inventive step when compared with the prior art base as it existed before the priority date of that claim.
3. Section 40/Fair Basis: The complete specification of the opposed application offends the provisions of Section 40(2)(a) and/or (b) and offends the provisions of Section 40(3).
SUBMISSIONS
I shall refer to the submissions from the opponent and applicant wherever necessary in my decision.
DECISION
Section 40/Fair Basis
The opponent raised a number of issues with regard to Section 40. They made the following submissions:
"The alleged invention appears to relate to the shape of the hull of a multi-hull vessel below the waterline. The preferred embodiment is described with reference to a lines plan that shows the shape of the hull. The claims, especially Claim 1, in defining the invention attempt to define the shape of the hull. Claim 1 in defining the hull recites five parameters, namely:
a) the position of the volumetric centre of buoyancy of the rear half of the hull below the waterline as a percentage of draft,
b) the position of the centre of buoyancy of the forward half of the hull below the waterline as a percentage of draft,
c) the position of the centre of area below the waterline on a frame that is 75% from the stern as a percentage of draft,
d) the width of the hull at the waterline is greater in the rear than the forward half and continually decreases in a forward direction, and
e) a bulbous underwater portion with a narrow waisted part extending through the waterline extends through a substantial portion of the forward half.
Whilst features (d) and (e) relate to shape, it is not clear that features (a), (b) and (c) determine the shape of the hull."
The opponent then made detailed submissions against each feature/groups of features. The first issue raised stated:
"1. Features (a) and (b) are imprecise and speculative. Both features define an open range terminating at 55% of the normal occurring draft. Whilst this open range provides some indication of the position of the centre of buoyancy in the vertical sense, there is no definition in Claim 1 nor in the body of the specification of where the centre of buoyancy is in a horizontal sense ie either transversely or longitudinally of the hull. The longitudinal position of the centre of buoyancy is critical to the seagoing characteristic of the hull.
The open range with the 55% limit at one end is broader than the invention disclosed in the specification. The preferred embodiment illustrated discloses a range of percentages for three different drafts taken across five frames from stern to bow. The average of the rear half is calculated to be about 66% and the average of forward half is calculated to be about 46%. These percentages are a long way from 55%. The 55% limit appears to be an arbitrary selection with no explanation in the specification. If the position of the centre of buoyancy is critical then a closed range should have been defined with its parameters confined closer to the example described in the specification."
The applicant's declarant Dr Renilson responds to the issues regarding features (a), (b) and (c) as follows:
"I consider features (a), (b) and (c) to clearly define the vertical position of the centre of volume of this hull shape and how this feature varies along the length of the hull. Features (a), (b) and (c) do not define a particular hull shape, rather they define particular parameters of the hull shape that can be readily determined in practice.
I agree that the claims do not define the position of centre of buoyancy in the horizontal (ie transverse and longitudinal) sense. However, I do not believe this renders the claims unclear as, the transverse position of the centre of buoyancy is not very relevant to the sea keeping properties of a vessel. Also, as I can clearly ascertain the boundaries of the hull shape being defined in the claims in terms of only the features in the claims, then I do not consider the transverse position of the centre of buoyancy to be important in determining whether the claims clearly define features of the hull for which patent protection is being sought.
The longitudinal position of the centre of buoyancy, and its separation from the longitudinal position of the centre of flotation, is traditionally considered important to the seakeeping properties of a vessel. However, there are practical limitations to the position of the longitudinal centre of buoyancy possible within the hull form described and claimed in the patent application which would be appreciated by a person skilled in the art of shipbuilding.
I disagree that the range of the vertical centre of buoyancy is open, as it can not be greater than 100% of the draft. I interpret a minimum value of 55% of draft to define a draft between 55% and 100% for feature (a). Similarly, in relation to feature (b), I interpret less than 55% to define a range between 0% and 55%. The expressions used in the claim of "greater than" or "less than" are clear and unambiguous as to the limits of the ranges they are defining.
I disagree that the 55% limit is an arbitrary selection. The hull shape has been defined with reference to, inter alia, the position of the centre of buoyancy relative to the draft of the forward and rearward halves of the hull with a transition occurring at the midships of 55%. It is thus logical, and proper, to define the hull forward of midships as less than 55% and the hull rearward of midships as more than 55%. In relation to the comment that the average values of the preferred embodiment differ from the 55% limit, I note that the hull shown in the figures represents only one example of a hull form produced in accordance with the invention."
I shall now address the section 40 issues raised above. In the matter of selection of the 55% limit section 40 of the Act does not require the applicant to justify selection of limits. What it does require is a full description of the invention and the best method of performing it known to the applicant. Regarding the preferred embodiment, all it needs to do is illustrate the invention. There is no requirement that the embodiment be practised at precisely the end points of the ranges. The opponent submitted that:
"Whilst it is strictly true that features (a) and (b) do not define an open range the fact that at one end of the range, namely 0% or 100%, is meaningless does in the view of the opponent effectively mean that the range is open. 55% defines one extreme but there is no indication of what is the other realistic extreme of the range."
The specification is addressed to persons skilled in the relevant art. They are in a position to perform the invention and test the validity of the ranges specified for various features. No evidence has been provided to show that they were unable to perform the invention within parts of the specified ranges or that the performance of the invention in certain parts of the ranges specified is not possible without inventive effort. I cannot conclude on the evidence before me that features (a) and (b) in their present form are imprecise and speculative. Another issue raised by the opponent related to the non-definition of the centre of volume/buoyancy in a longitudinal sense. The applicant has indicated that this feature is not required to put the invention into effect. The opponent has not put forward evidence to show that this feature is essential to a performance/working of the invention. In fact the opponent has provided a number of comparisons of prior art vessels with the applicant's invention with a view to proving the lack of novelty of the opposed invention. I cannot conclude that the definition of the longitudinal location of the centres of volume/buoyancy is essential to a full definition of the invention.
The second issue raised by the opponent stated:
"2. The features (d) and (e) were both added by post acceptance amendment. Feature (d) seems to infer that at the waterline the hull is triangular in plan, that is it is widest at the stern and continuously decreases to the bow; yet Claim 7, which is dependent on Claim 1, recites that the width of the hull at the waterline is substantially constant for the sternward quarter. This claim seems to be outside the scope of Claim 1. Alternatively the scope of Claim 1 in relation to feature (d) is ambiguous and unclear."
The applicant's declarant Dr Renilson stated:
"I disagree with the opponent's submissions and, more particularly, do not believe that feature (d) requires the waterline to be triangular in plan or for the waterlines to be straight. Feature (d) clearly states that the width of the hull at the waterline is substantially greater in the afterbody of the hull than in the forward body and that it continuously decreases in the forward direction. It does not state that it constantly decreases in the forward direction (ie decreases at a constant rate). I thus interpret this feature to define a general width reduction."
In an earlier declaration Dr Renilson had stated that:
"…claim 7 requires that the width of the hull at the water line is "substantially constant in the case of the sternward quarter part." I consider that the phrase "substantially constant" can allow for a small change and I consider this to be consistent with claim 1 where there needs to be a gradual decrease". What is clear is that increases in water line width from the stern to the bow are not permitted."
In his latest declaration Dr Renilson adds:
"I reiterate that I consider claims 1 and 7 preclude any vessel in which the waterline beam decreases towards the stern, as it would do for a conventional vessel, but include any vessel where the waterline beam either remains constant or increases from the midships towards the stern."
The relevant part of claim 1 states:
"the width of the hull at the water line is substantially greater in the after body of the hull than in the foreward body of the hull and continually decreases in a forward direction,"
and claim 7 states:
"A hull according to any one of claims 1 to 5, wherein the width of the hull at the water line is substantially constant in the case of the sternward quarter part of the vessel and then narrows towards the prow of the vessel."
The term 'continual' has been given the following meaning in The Australian Concise Oxford Dictionary (2nd Edition 1992; published by Oxford University Press):
"constantly or frequently recurring; always happening."
Thus the term 'continually decreasing' in claim 1 indicates that the width of the hull is always decreasing in a forward direction from the stern. There is no indication that the rate of decrease must be fixed or constant but that the width does not cease decreasing in a forward direction from the stern. The opponent's declarant Mr. Black, in his exhibit JMB-9 (accompanying his first declaration dated 1 October 1996) shows a clear understanding of the term continually decreasing as evidenced from the second sketch in his exhibit. This shows the hull cross section as widest at the stern and decreasing towards the bow.
The term 'substantial' has been defined in The Australian Concise Oxford Dictionary (supra) as;
"essential; true in large part"
"of large size or amount"
Thus the term 'substantially constant' would equate to essentially or largely constant. Thus some small decrease in the width of the hull across the sternward quarter part is consistent with the use of this term as the small decrease would allow the hull width to remain substantially/essentially constant. The small but continual decrease is as per the requirement of claim 1 and thus I cannot conclude that claim 7 is inconsistent with claim 1 in this regard. I note that the term "generally decreasing" had been used in the accepted specification and did cause some ambiguity in the specification which the use of the term "continually decreasing" has overcome.
The third issue raised by the opponent stated:
"3. Feature (e) recites that a bulbous underwater portion and narrow waisted portion extends for a substantial portion of the forward half of the hull. The preferred embodiment (Fig. 1) shows the bulbous and waisted portion extending throughout the entire forward half of the hull. Claim 8 as accepted recited that 'the cross sectional shape of the hull at the foreward half of the hull includes a bulbous underwater part'. There is no basis in the specification for reciting that it only extends for a substantial portion and the meaning of 'a substantial portion' is unclear."
The applicant argued that:
(a) the consistory clause at p.3 ll.3-19 of the specification discloses this feature;
(b) the preferred embodiment of the invention described by reference to the drawings has a bulbous underwater part and a narrow waisted part extending over a substantial portion of the foreward half of the hull. The fact that the part so depicted extends over the entire foreward half of the hull is not inconsistent with the way in which this feature is defined.
The feature in question is defined in claim 1 as:
"wherein the cross-sectional shape of the hull throughout a substantial portion of the forward half of the hull located between the bow and midships has a bulbous underwater part and a narrow waisted part which extends through the water line."
This feature is included in the consistory statement of the invention. There is no explicit definition of the term "substantial portion" in relation to the forward half of the hull. The preferred embodiment both in the drawings and description shows that the bulbous portion extends throughout the forward half of the hull. The description at page 3A, line 26 and page 4, lines 6-7 states:
"The bulbous shape of the foreward part of the hull cross-section,"
"…the bulbous shape of the cross-section of the foreward hull part"
Thus the description indicates that the foreward part of the hull cross-section has a bulbous shape. There is no indication of a specific reference to 'a substantial portion of the foreward part' other than in the consistory statement. However the plain meaning of the term 'substantial' as set out above states:
"essential; true in large part"
"of large size or amount"
The opponent has contended that even 20% is a substantial portion. I disagree with the same as the plain meaning of 'substantial' above clearly indicates a large part. The embodiment of the invention has disclosed that the hull cross-section has a bulbous shape throughout the forward half of the hull. Claim 1 defines that this shape extends throughout a substantial portion of the forward half of the hull. I do not see a huge inconsistency between claim 1 and the embodiment when they define the length along which the bulbous shape of the hull extends. I do not consider that the use of the term 'substantial portion' has no basis in the specification and that its meaning is unclear. Consequently I conclude that claim 1 in its present form is fairly based on the specification.
The fourth issue raised by the opponent stated:
"4. The reference in the claims to the expressions 'volumetric centre of gravity' and 'centre of gravity of frame area' are incorrect and thus ambiguous."
The opponent's declarant Mark Ellis states:
"…the expression 'volumetric centre of gravity' is unclear to me. I have concluded that it equates to the more usual expression 'centre of buoyancy' ".
None of the other declarants have expressed difficulty in understanding the meaning of the terms "volumetric centre of gravity" and "centre of gravity of frame area". They have equated these terms to mean "centre of volume/buoyancy" and "centre of (frame) area" respectively. I do not consider that use of the expressions "volumetric centre of gravity" and "centre of gravity of frame area", raise ambiguities and/or render the claims as lacking in clarity.
I conclude that the opponent has not established any Section 40/Fair Basis Deficiencies in the specification.
Lack of Novelty
The reverse infringement test from Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1976) 137 CLR 228 at 235 sets out the basic test for anticipation or want of novelty:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."
It follows from the reverse infringement test that if a citation discloses all the features of the claim, the claim will lack novelty. If the citation does not disclose all the features of the claim, the claim will still lack novelty provided the citation discloses all the essential features of the claim; but if the essential features are not disclosed in the citation, the claim is novel (Nicaro Holdings v Martin Engineering 16 IPR 545 and Catnic Components Ltd v Hill and Smith Ltd (1982) RPC 183).
I shall begin by assuming that all features of the independent claims are essential (Catnic Components Ltd v Hill and Smith Ltd (1982) RPC 183). Claim 1 has the following features:
1. A hull for multi-hull seagoing vessels capable of speeds greater than 30 knots, wherein:
2. in the case of the sternward half of the hull, located between the stern and midships of the hull, the vertical distance from the hull base line to the volumetric centre-of-gravity of that part of the respective half of the hull below a water line corresponding to a normally occurring hull draft is greater than 55% of the normally occurring draft;
3. in case of the foreward half of the hull, located between the forebody of the hull and midships, said vertical distance is less than 55% of the draft;
4. at a position corresponding to 75% of the total length of the underwater body of the hull calculated from the stern of the hull, the distance between the base line and the centre-of-gravity of the frame area (as defined herein) below the waterline, and at that position is less than 55% of the draft; and
5. the width of the hull at the water line is substantially greater in the after body of the hull than in the foreward body of the hull and continually decreases in a forward direction, and
6. wherein the cross-sectional shape of the hull throughout a substantial portion of the forward half of the hull located between the bow and midships has a bulbous underwater part and a narrow waisted part which extends through the water line
The opponent submitted that a majority of the claims were not novel in light of the prior art base at the priority date of the claims. In support of this they submitted the following arguments:
"Four vessels, Crowther Design 155, Crowther Design 157, Austal Hull 18 and Austal Hull 14 were designed, manufactured and launched in Australia before the priority date of the opposed application. All these vessels are catamarans having hulls that have a shape very similar to the hull defined by the claimed parameters of the opposed application. Calculations have been carried out using the line plans of the four prior art vessels to show that the prior art vessels fall within 2% of the parameters claimed in Claim 1. The opponent's experts allege that a 2% variation can be attributed to adjustments in load and trim. Evidence has been submitted to support this contention."
The opponent's declarant James Black has carried out a comparison of the prior art against the claimed invention in his declaration dated 1 October 1996. This comparison is based on the claims as accepted and amended by proposed amendments filed on 13 October 1995. The tables at pages 4 and 5 of Mr Black's declaration shows that all the prior art vessels disclose features 1 and 2 of the claimed invention.
Regarding features 3 and 4 of claim 1, three of the prior art vessels are shown to be within 2% of the limits specified. Subsequently the opponent stated that the 2% variation arose because of operational changes of trim or loading condition on any of the prior art vessels. In his declaration dated 26 November 1998 Mr Black provided figures for the three vessels at varying conditions of load and trim. The claims refer to the condition of "normally occurring draft" which was interpreted as 'local draft' both by Mr Black and Dr Renilson. On this basis the new calculations again show the three vessels falling within 2% of the ranges defined in features 3 and 4. However they still do not fall within the ranges.
Regarding feature 5 the opponent had construed this feature such that the term 'continually decreasing' includes the shape wherein "the stern at the waterline is close to its maximum width but first increases slightly prior to then tapering forwardly". I have dealt with this issue under Section 40 and the conclusion I arrived at was that this feature shows that "the stern is the widest part of the hull at the waterline and the hull continuously decreases in a forward direction. Based on the drawings and evidence provided I cannot conclude that the prior art vessels have disclosed this feature.
Considering feature 6 the opponent has claimed that for the prior art vessels generally the bulbous and waisted portions only extend for up to half of the forward half of the hull. The opponent contends that even 20% is a substantial portion. As I stated previously I do not consider that 20% constitutes a substantial portion. The exhibits JMB 3-6 disclose the length along the hull of the bulbous portion. None of the vessels show the bulbous portion as clearly equalling and/or exceeding even half of the forward length of the hull. I cannot conclude that feature 6 of the opposed invention has been disclosed by the prior art. As each of the prior art vessels has not individually disclosed all the essential integers of the opposed invention they have not rendered the opposed invention as lacking in novelty. The opponent has not proven that the claimed invention is lacking in novelty.
Inventive Step/Obviousness
Subsections 7(2) and 7(3) of the Patents Act 1990 indicate that a claimed invention will lack an inventive step if it is obvious to a person skilled in the relevant art in the light of:
(a) common general knowledge in the art; or
(b) common general knowledge considered together with information publicly available in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.
Assessment of inventive step may be carried out using any one of a variety of tests. Cooper J. in Winner & Another v Ammar Holdings Pty Ltd, 25 IPR 273 at page 294 stated:
"In order to ascertain whether or not the subject matter sought to be patented was beyond the skill of the calling, the courts have adopted a number of different approaches directed to the same end: for example, was the invention obvious or not?; does the invention solve an important problem "unsuccessfully attacked by previous inventions"?: Wood v Gowshall (1937) 54 RPC 37 at 39."
Aickin J. set out the following tests in Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at page 270:
"It is as well to bear in mind that the question of obviousness involves asking the question whether the invention would have been obvious to a non-inventive worker in the field, equipped with the common general knowledge in that particular field as at the priority date, without regard to documents in existence but not part of such common general knowledge."
and at page 286:
"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."
Application of these tests would require:
a determination of the non-inventive worker in the field (or the person skilled in the relevant art ) in Australia.
a determination of the common general knowledge in Australia at the priority date.
The common general knowledge relevant to the question of obviousness was described by Aickin J. in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Limited, (1980) 144 CLR 253 at 292 as:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."
In order to apply the tests set out above I shall have to determine which declarants had skills relevant to the art of designing/building multi-hull seagoing vessels capable of speeds greater than 30 knots at the priority date of 30 January 1991. Looking at the various declarants I consider the following persons skilled in the relevant art in Australia and I shall have regard to their declarations for the purpose of determining the common general knowledge (CGK) in Australia at the priority date in question:
Mark Ellis (Danyard): Has work and design experience in the field of vessel (tugs, trawlers, motor yachts, catamarans) design.
James Black (Danyard): Qualified naval architect, with 20 years experience in the marine industry. Specialised in aluminium and FRP vessels up to 100 metres in length as well as the design and production (since 1984) of multi-hull vessels.
Dr Renilson (Stena): Qualified naval architect, with extensive design, research and teaching experience. Currently Principal Lecturer at the Australian Maritime College.
Christian Schack (Danyard) is employed as a naval architect with Danyard in Denmark. He gives no indication of any work experience in Australia. I consider that he is not a person skilled in the art in Australia but I shall have regard to his declaration in the matter of establishing the general state of the art.
The opponent submits:
"At the priority date of the opposed claims, the state of the art in vessels of this kind finishes with the four vessels that form the prior art. The parameters of these vessels fall very close to the parameters defined in the claims. The 2% variation is known to those skilled in this art as being very slight indeed and could be the result of variation in draft or trim. It is the common general knowledge of the hypothetical skilled person in this art at the priority date to consider minor differences between what is claimed in the opposed application and what was known in the prior art as being an obvious extension and not involving an inventive step."
The four vessels are Crowther 155 and 157, Austal 18 (Shun Shui) and Austal 14 (Equator Triangle). The Black declaration dated 1 October 1996 provides a comparison with the opposed invention at pages 4 and 5. Further data on Crowther 155, Austal 14 & 18 were provided in Mr Black's declaration dated 26 November 1998. The opponent contends that these four vessels were well known before the priority date. The applicant has not challenged this assertion. No published documentation has been provided to show that the designs of the hulls of these vessels were available to the public or those skilled in the relevant art in Australia. However as both parties have shown, through the declarations of their experts, that the above four vessels constituted the prior art in the field, I shall use them as the prior art base to consider the issue of inventive step. The question I have to ask is:
"…whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."
The specification discloses the following problem which it seeks to overcome:
"…to provide a hull structure which a) has low tendency to upward lift under the influence of waves during movement of the vessel through water, b) is highly efficient and will allow the vessel to be propelled at high speeds, c) will result in only a small reduction in speed in high seas, d) has a high load resistance and will enable the vessel to be powered by means of any desired power means, including water-jet propulsion systems, and e) has a high stern stability so as to enable the vessel to be loaded and unloaded from the stern thereof."
Looking at claim 1 the features which are close to the prior art are:
3. in case of the foreward half of the hull, located between the forebody of the hull and midships, said vertical distance is less than 55% of the draft;
4. at a position corresponding to 75% of the total length of the underwater body of the hull calculated from the stern of the hull, the distance between the base line and the centre-of-gravity of the frame area (as defined herein) below the waterline, and at that position is less than 55% of the draft.
All the prior art vessels do not show features satisfying the requirements of the respective distances being less than 55% of the draft. They come within 2% of this figure. The opponent contended that variations in load and trim could account for the 2% variation, but their calculations still do not show the above features satisfying the requirement of falling below 55%. The opponent has not provided any submissions as to how the skilled addressee might proceed to arrive within the ranges of the opposed invention. There are other features within claim 1 and I shall now consider these:
5. the width of the hull at the water line is substantially greater in the after body of the hull than in the foreward body of the hull and continually decreases in a forward direction,
I have discussed this feature under Section 40 and my conclusion was that this shows a hull width widest at the stern and continually decreasing towards the bow. The prior art as shown by the opponent has disclosed:
"the stern at the waterline is close to its maximum width but first increases slightly prior to then tapering forwardly."
The opponent has not shown what reasoning/prior art design principles/knowledge would guide the skilled addressee to alter the shape of the stern to match feature 5.
Looking at feature 6 it discloses:
6. wherein the cross-sectional shape of the hull throughout a substantial portion of the forward half of the hull located between the bow and midships has a bulbous underwater part and a narrow waisted part which extends through the water line.
The prior art vessels have disclosed bulbous bows and generally the bulbous and waisted portions only extend for up to half of the forward half of the hull. The opponent contends that even 20% is a substantial portion. As I stated previously I do not consider that 20% constitutes a substantial portion. The exhibits JMB 3-6 disclose the length along the hull of the bulbous portion. None of the vessels show the bulbous portion as clearly equalling and/or exceeding even half of the forward length of the hull. The opponent has not shown what reasoning (being part of the CGK or normal equipment of the skilled addressee) would lead the skilled addressee from the prior art to feature 6 of the invention. In particular what would lead them to extend the bulbous portions of the hull across a substantial portion of the forward half of the hull.
Consequently I cannot find that the hypothetical skilled addressee would have taken as a matter of routine whatever steps might have led from the prior art to the opposed invention.
CONCLUSION
The opponent had challenged the validity of the opposed specification on the grounds of Section 40/Lack of Fair Basis, Lack of Novelty, and Lack of Inventive Step. The opponent has failed to establish any of the grounds in this opposition.
Subject to any appeal, I direct that the application proceed to sealing.
COSTS
The opponents made the following submissions with regard to costs. The first was at the hearing and the second was in a submission filed with the Patent Office on 29 October 1999:
"The opposed application should be refused and costs awarded to the opponent. In the event that the decision goes against the opponent, it should be noted that the applicant has twice sought amendments of the claims during this opposition. If the applicant is to obtain an award of costs then these costs only relate to activities subsequent to the last amendments of the 5 March 1998."
"Whilst costs usually go with the decision, the applicant has twice sought amendments to the claims. Thus, costs should be awarded to the opponent up to the publication of the allowability of the last amendments namely 4 March 1999."
The applicant made the following submission in relation to costs:
"Costs should follow the event. Should the opposition be resolved in the applicant's favour then the opponent should be required to pay the applicant's costs of the opposition proceedings."
The power of the Commissioner to award costs is based on Section 210 and Regulation 22.8. I had indicated previously that the opposed specification was twice amended after acceptance. The amendments resulted in the addition of two integers to claim 1. These additions resulted in a better definition of the invention as well as a clearer distinction of the invention from the prior art. Consequently I consider that the opponent is entitled to some costs in this matter because their opposition has led to a substantial narrowing of the main claim. Accordingly I award costs in favour of the opponent Danyard A/S and against the applicant Stena Rederi AB up until 4 March 1999 when the allowance of the last amendment to the opposed specification was advertised by the Patent Office. Subsequent to 4 March 1999, as the opponent was unsuccessful, I award costs in favour of the applicant Stena Rederi AB and against the opponent Danyard A/S.
Jacob Elijah
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Spruson & Ferguson, Sydney
Patent attorneys for the opponent : Griffith Hack, Melbourne
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